The problem-solution approach to patents has been discussed in past posts. While the problem-solution approach makes sense when used in the right situation, inevitably Examiners use the Applicant's explanation as a guide to combine the prior art, especially art aimed at the same problem. Of course such action is improper, and common sense confirms that the Office should not be able to use the inventor's own recognition of advantages as a reason to combine prior art references. While case law may be on the side of Applicants, there is still a strong tendency for Examiners to fall victim to hindsight.

One way to address this situation (in addition to citing controlling authority chastising the approach) is to explain with specific details tied to claim elements how the claimed invention enables operation that achieves something that simply cannot be achieved by the prior art when combined.

In a recent appeal, the Office essentially argued that it would be obvious to combine two references to be able to achieve a certain advantage (the same advantage described in the application). To point out the fallacy in the Office's reasoning, the appeal brief took the approach of describing how the invention took a different approach to solving the same problem as the primary reference, but then achieved advantages unrecognized as even being possible. Further, the invention actually achieved advantages that were not possible due to the different features in the primary reference. By pointing out advantages of the invention not achieved by even the Examiner's proposed combination of prior art references, it was possible to highlight the lack of motivation for making the proposed combination. In developing these arguments, it was important that such explanations not be conclusory, and actually explain how one goes from claim elements to a tangible technical advantage. While in this particular case the brief was successful on its own without requiring a PTAB decision, not all Examiners are able to accept their errors directly.

These types of arguments can also be helpful in illustrating how the evidence of record fails to establish that, even when combined, the result of that combination would be the claimed elements.

So, the next time you feel like the Examiner is using hindsight, consider laying out the situation to highlight just how the proposed combination cannot achieve the advantages of your claimed invention.